Ten Strategies for Exploiting Patent Reform

1. File Early and File Often.

Get a prompt early filing date for new developments with a provisional patent application.  Update and re-file the provisional application as improvements are made.  Get the earliest possible filing date for each development.  Until there is clarity, do not trust the one year grace period where you do not have to.

2.  Consider a Simultaneous Public Disclosure With Your Patent Filings.

Simultaneous publication with your patent filings creates an early prior art date in case you elect not to pursue your provisional patent application.  (A provisional application that is never converted or refilled as a utility patent application is not prior art).

3.  Control Which Law Applies To Your Application.

In most cases the old patent law is more advantageous to applications, so applicants will want to file all new applications and new continuation in part (C-I-P) applications before March 16, 2013.  After March 16, 2013, applicants may want to segregate continuation applications from CIP applications that might be covered by the new law.

4.  File Parallel Applications Under Both the Old And New Laws?

To the extent that an applicant perceives a benefit to being treated under the new law, that applicant may want to hedge its bets by filing an application before March 16, 2013, and a second C-I-P application with a slightly supplemented disclosure after March 16, 2013.  The applicant can then have the new law apply simply by adding a claim to the supplemented disclosure at any time (but cancelling the claim won’t revert the application to the old law).

5.  Watch What Your Competitors Are Up To.

Now more than ever it is a good idea to watch the applications of your competitors because the new patent law improves your ability to do something about it, by submitting prior art to the USPTO, Post-Grant Review (PGR) and Inter Partes Review (IPR).

6.  Carefully Consider the Consequences of PGR and IPR

The new law provides two ways to challenge another’s patent, but the impact of estoppel provisions on the ability to defend subsequent litigation if the effort is not entirely successful must be carefully considered.

7.  Don’t Throw Away Your Inventors’ Notebooks.

Many inventors will be disappointed to learn that the first-to-file does not mean they can throw away their notebooks.  An inventor’s notebook can still be valuable proof that an invention was not derived from another.

8.  Document Your Disclosures to Third Parties.

Document your disclosures to third parties, noting what was disclosed, when it was disclosed, and to whom it was disclosed.  This could be valuable proof that a third party derived the invention from you.

9.  Consider the Effect of Publication of Your Application

While publication of your application locks in its prior art effect as of its filing date, and creates provisional patent rights, it also starts the one-year clock for initiating derivation proceedings against competing applications or patents.

10.  Thoroughly Vet Your Patents before Enforcement

It has always been a good idea to pressure test your patent before heading to court, but the new patent law provides for Supplemental Examination to correct or remove many of the potential defects you might discover.

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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.